USPTO Defers Fees On COVID-19 Provisional Applications

By Adam Lidgett
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Law360 (September 16, 2020, 9:25 PM EDT) -- The U.S. Patent and Trademark Office said Wednesday that inventors attempting to obtain patents for products to fight COVID-19 will be able to put off having to fork over certain application fees under a new agency program. 

Under the new pilot program, the USPTO said it would defer provisional application fees on products and processes related to the fight against COVID-19, as long as the invention on the provisional application has or eventually will have U.S. Food and Drug Administration approval to fight the coronavirus.

"This information flow is now more important than ever in view of the urgent challenges posed by the COVID-19 outbreak," the USPTO said.

Applicants covered by the program — which will take applications for a year starting on Sept. 17 — won't have to pay the fee at issue until they file a non-provisional application, according to the USPTO. 

Additionally, applicants will have to agree to the public posting of the technical details of what they are trying to patent.

"To foster dissemination and collaboration, they must agree that the technical subject matter disclosed in their provisional applications will be available to the public on the USPTO's website," the agency said. "By making their disclosures available, applicants can contribute to the public in the fight against COVID-19 while protecting their patent rights."

The announcement is the latest in a series of actions taken by the USPTO in response to the outbreak.

In June, the USPTO announced an examination program that aimed to prioritize certain trademark and service mark applications related to the novel coronavirus in efforts to expedite the review process by an estimated two months.

In May, the agency launched a "Patents 4 Partnership" platform to support patent owners who seek to license intellectual property related to the "prevention, treatment and diagnosis" of COVID-19.

That platform's goal was to create a "user-friendly, searchable repository of patents and published patent applications" related to the coronavirus, which the agency said will help connect patent owners with businesses that are interested in obtaining licenses to the technology.

When the pandemic began, the USPTO also waived other requirements that didn't require congressional approval, including certain fees to file petitions seeking to revive patent and trademark applications abandoned based on missed deadlines.

The USPTO declined to comment further on Wednesday.

--Additional reporting by Tiffany Hu, Dani Kass and Dorothy Atkins. Editing by Steven Edelstone.

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